Thailand acceded the Madrid Protocol on 7 November 2017 and has adopted the 18 month-timeframe for granting registration or refusal of the international trademark application filed through the Madrid System.
As of 21st April 2020, the Trademark Office of Thailand under the Department of Intellectual Property (DIP) of Thailand received 23,279 international trademark registrations (IR) designating Thailand for registration. Each IR designating Thailand for protection is issued with a Thailand application number and examined by the TMO before it is refused or granted registration. If it is granted registration, a Thailand registration number is issued to it.
The TMO issues provisional refusal orders against the majority of the IRs designating Thailand for registration and sends such orders to the applicants via the International Bureau of the WIPO. The TMO refuses a trademark application mainly because the Trademark Registrar of TMO is of a view that:
- the specifications of goods or services under the application are too broad or unclear, and/or
- the mark lacks distinctiveness because it is descriptive of the goods or services under the application or it is a common word not presented in any stylized lettering, etc., and/or
- the mark is identical with or confusingly similar to a prior pending or registered mark of another person for goods or services in the same classes or related classes.
The Trademark Registrars of the TMO are stringent and discretionary when they examine trademark applications and issue refusal orders. They often find the specifications of goods and services too broad or too vague and therefore order them to be amended. In examining the IR applications, the Trademark Registrars themselves translate the specifications of goods and services from a foreign language into Thai. Sometimes the Thai translations they prepare are unclear.
Each refusal order is deemed to have been received by the applicant upon the expiration of the 30-day period from the TMO’s order issue date. A response to the refusal order must be made in the Thai language and filed with the TMO within 60 days from the end of the said 30-day issue period.
To file a response to the TMO’s refusal order, the applicant must appoint a Thai trademark attorney. If the applicant disagrees with the TMO’s order, the applicant, through the Thai trademark agent, can file an appeal with the Trademark Board (TMB). The TMO takes at least 6 months to review the response. The TMB takes at least 2 years to review the appeal.
AUTHORS
Kowit Somwaiya
Hathaichanok Limpattanakul
